Latest round in battle of the Diddies

To settle proceedings brought by London DJ Richard ‘Diddy’ Dearlove, US rap artist ‘Diddy,’ formerly known as Puffy Combs, agreed to stop advertising products in the UK under the ‘Diddy’ brand. But did this extend to songs on Diddy’s CD? Veena Srinivasan reports.

Topic: Brands

Who: Sean Combs and Richard "Diddy" Dearlove

Where: High Court

When: March 2007

What happened:

You may recall our report entitled "Diddy v Goliath" (http://www.marketinglaw.co.uk/open.asp?A=1439) in which we reported on London's own music producer's battle against the famous entertainer and entrepreneur Sean Combs over the right to use the name "Diddy".

The parties settled this matter and, as part of the settlement deal, Combs had agreed to pay over £110,000, the bulk of which was in respect of legal costs.

Things have moved on since then and Dearlove has recently brought a claim against Combs for breach of the 2006 settlement agreement.

Under clause 1.1 of the settlement agreement, Sean Combs agreed not to advertise, offer or provide any of his goods or services by reference to the word "Diddy". Dearlove claimed that Combs had breached this term and sought summary judgment against Combs.

His first complaint was the use of the "Diddy" name in connection with Combs' web presence on MySpace, YouTube and www.badboyonline.com.

His second complaint concerns tracks on Combs' album, "Press Play", in which Combs is referred to as "Diddy".

Summary judgement

Under 24.4 of the Civil Procedure Rules, a court may give summary judgement on the whole of a claim or a particular issue if it considers that the defendant, in this case Combs, has no real prospect of successfully defending the claim or issue and there is no other compelling reason why the case or issue should be taken to trial.

Websites

Advertising by reference to the name "Diddy"?

Mr Justice Kitchin accepted that placing a mark, for example "DIDDY", on the Internet from a location outside the UK could, potentially, constitute the use of that mark in the UK.

Justice Kitchin acknowledged that MySpace, which describes itself as a social networking site, is widely used by artists as a means of promoting their music.

Justice Kitchin recognised that the YouTube site, which allows users to share and view footage online, is now utilised by artists in order to promote their recordings and shows. Even Mr Calvert, Combs' lawyer in this matter, accepted that the site is valuable marketing tool for artists.

Combs' web pages on both sites referred to above contained numerous references to "DIDDY". In addition, When a UK user accessed the website www.badboyonline.com, is directed to webpages references to Diddy.

To give a few examples, the MySpace page contained the words "DIDDY PRESS PLAY" and then "THE INNOVATIVE NEW ALBUM". It listed "UPCOMING SHOWS", which included Combs' UK shows. The YouTube site contained a number of videos, one of which, called "Thank You", showed Combs thanking viewers for supporting "Diddy".

Justice Kitchin accepted that Combs' pages on YouTube and MySpace, and the badboyonline.com site, advertised and promoted his goods and services, particularly his "Press Play" album, by reference to the name "Diddy".

Aimed at UK user?

This leaves the question of whether or not the average UK consumer of the goods or services in issue would regard the advertisement and the site as being aimed and directed at him/her.

In order to answer this question, Mr Kitchin explained that the material circumstances that will need to be considered include the following:

(a) the nature of the goods or services;

(b) the appearance of the website;

(c) whether or not it is possible to buy goods or services form the website;

(d) whether or not the advertiser has in fact sold goods or services in the UK through the website or otherwise; and

(e) any other evidence of the advertiser's intention.

Justice Kitchin held that the web pages and the badboy site were directed at UK users. He gave the following reasons.

1. Combs is an international celebrity and his latest album, "Press Play" is sold in the UK.

2. Combs is scheduled to perform live shows in the UK as part of his current tour, which indicates that he continues to have a substantial UK business.

3. Combs' representatives, including Mr Calvert, accepted that the MySpace and YouTube pages were a valuable marketing tool and also that they were treated as a "key piece" of Combs' global marketing campaign and are intended to promote Combs' "internationally". This makes it clear that these pages are intended to be accessed by users outside the US.

4. Finally, all three sites refer to UK users.

Based on this reasoning, Justice Kitchin held that the web pages and the website do advertise goods and services in the UK by reference to the word "Diddy", and, therefore, Combs' has no reasonable prospect of succeeding on this issue at trial.

Lyrics

Dearlove also complained that certain tracks on Combs' "Press Play" album contain lyrics referred to Combs as "Diddy', which, among other things, are a form of advertisement and self-promotion.

Justice Kitchin explained that, in principle, a lyric could be used to advertise goods or services under a particular name. In assessing whether the lyrics in this case constitute the advertisement of goods and services in the UK under the name "Diddy", he considered it necessary to look at the circumstances, including:

(a) how the lyric would be understood by the average consumer; and

(b) the lyric as a whole.

He assessed the lyrics in the 5 tracks containing references to the word "Diddy" and held that only one of them could be said to be a straightforward advertisement of Combs' goods and services by reference to the word "Diddy".

The relevant lines of the track, entitled the Future, were:

Mainline this new Diddy Heroin

Download me in every resident

My CD's in 3-D holograms

The live show's a hard act to follow man

In relation to the other tracks, Justice Kitchin held that, although they contain references to Combs's as "Diddy", they do not promote his goods or severs in the UK, under that name.

Why this matters:

So, the UK courts accept that:

sites such as MySpace and YouTube are a valuable marketing tool; and

song lyrics can be used to promote goods and services.

Combs' representatives have made statements such as:

"This essentially means that an unknown celebrity can attempt to restrain a worldwide celebrity if the two share the same name […]. We feel that turns the law on its head, because it makes celebrities, like our client Mr Combs, inviting targets."

This is a point worth considering, as this kind of claim could result in huge expenditure for the "target" celebrity. To use this case as an illustration, under last year's settlement agreement, Combs agreed to re-brand himself as "P-Diddy" in the context of his activities in the UK, which is an expensive exercise in itself. However, in reality, it turns out that Combs and his record companies decided to complete the re-branding exercise throughout the world outside North America. Mr Calvert explained that this was because of the practical impossibility of controlling the movement of licensed products from country to country.

On the other hand, perhaps Combs got off lightly, Dearlove had intended to prevent Combs from referring to himself as "Diddy", however, four tracks on the "Press Play" album, which contain references to Combs as "Diddy" album are left unaffected. Why? Clause 1.1 of the settlement agreement only required the court to consider whether the word "Diddy" was being used to advertise goods or services in the UK, and NOT whether the references to Combs as "Diddy" would diminish Dearlove's goodwill in the name "Diddy". Something to bear in mind when negotiating similar settlement agreements.

It does not look like we have heard the last on this matter yet, as the issue of whether Combs has control over the content in the websites and the "Press Play" album was left undecided; Justice Kitchin did not feel that he could rule on the issue of control, as he had not been provided with the necessary evidence. Therefore, there is a possibility that Diddy and the "artist briefly known as Diddy" will meet again in the context of a full trial.